CID Resources, Inc.

Trademark Trial and Appeal Board

Feb 13, 2018

No. 86829440 (T.T.A.B. Feb. 13, 2018)

This Opinion is Not a
Precedent of the TTAB

Mailed: February 13, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re CID Resources, Inc.
_____

Serial No. 86829440
_____

Dyan M. House of Baker & McKenzie LLP,
for CID Resources, Inc.
Colleen Dombrow, Trademark Examining Attorney, Law Office 101,
Ronald R. Sussman, Managing Attorney.
_____

Before Lykos, Greenbaum and Coggins,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:
CID Resources, Inc. (“Applicant”) seeks to register on the Principal Register the
standard character mark GRACE for goods ultimately identified as:1
Medical wearing apparel, namely, scrub tops and bottoms; medical wearing
apparel, namely, pants for emergency medical personnel in International
Class 10; and

Nurse’s apparel, namely, tops and bottoms, uniforms, lab coats; scrubs not
for medical purposes in International Class 25.

1 Application Serial No. 86829440, filed November 23, 2015 under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), alleging a bona fide intent to use the mark in commerce.
Serial No. 86829440
- 2 -
Registration was refused as to both classes under Section 2(d) of the Trademark
Act of 1946, 15 U.S.C. § 1052(d), on the ground that Applicant’s applied-for mark so
resembles the registered mark GRACE in typed format2 for “women’s sportswear,
namely, jackets, pants, skirts, blouses, dresses, shirts, and knit tops, but excluding
pantyhose and hose” in International Class 25,3 that it is likely to cause confusion or
mistake or to deceive.
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Trademark Examining Attorney denied the request for
reconsideration, the appeal was resumed and is now briefed. For the reasons
explained below, we affirm the refusal to register as to both classes of goods.
I. Evidentiary Issue
Before discussing the substance of this appeal, we shall address the Examining
Attorney’s objection to Applicant’s submission with its appeal brief of a list third-
party applications and registrations, purportedly to show that the cited mark is weak
in the clothing field. The Examining Attorney has objected on the ground of
untimeliness. Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d), provides in relevant
part “[t]he record in the application should be complete prior to the filing of an appeal.
Evidence should not be filed with the Board after the filing of a notice of appeal.”
Insofar as the Examining Attorney has timely interposed an objection to Applicant’s

2 “Prior to November 2, 2003, ‘standard character’ drawings were known as ‘typed’ drawings.
… A typed mark is the legal equivalent of a standard character mark.” TRADEMARK
MANUAL OF EXAMINING PROCEDURE § 807.03(i) (Oct. 2017).
3 Registration No. 2781042, registered November 11, 2003; renewed.
Serial No. 86829440
- 3 -
late-filed evidence with her brief, the objection is sustained and the evidence
submitted concurrently with Applicant’s appeal brief has been given no
consideration.4 See e.g., In re Fiat Group Marketing & Corporate Commc’ns S.p.A.,
109 USPQ2d 1593, 1596 (TTAB 2014).
II. Likelihood of Confusion
We turn now to the substantive refusal before us. Our determination under
Section 2(d) is based on an analysis of all of the probative evidence of record bearing
on a likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973) (“du Pont”). See also In re Majestic Distilling Co., 315
F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion
analysis, however, two key considerations are the similarities between the marks and
the similarities between the goods. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). These factors, and the other relevant
du Pont factors, are discussed below.
A. The Marks

Commencing with the first du Pont factor, it is undisputed that Applicant’s and
Registrant’s marks are identical.5 And in our view, this is not a situation where the
same marks are used to identify goods so dissimilar as to engender different

4 We add that Applicant’s listing of third-party registrations and applications based on search
results from USPTO records was not an appropriate manner of making this evidence of
record. See In re Hoefflin, 97 USPQ2d 1174, 1177 (TTAB 2010). To make third-party
registrations part of the record, an applicant must submit copies of the registrations, or the
complete electronic equivalent from the USPTO’s automated systems, prior to appeal. See In
re Jump Designs LLC, 80 USPQ2d 1370, 1372-73 (TTAB 2006).
5 Indeed, Applicant presents no arguments regarding this factor in its brief.
Serial No. 86829440
- 4 -
connotations or commercial impressions. See, e.g., In re Sydel Lingerie Co., Inc., 197
USPQ 629 (TTAB 1977) (no likelihood of confusion found between BOTTOMS UP for
ladies’ and children’s underwear and BOTTOMS UP for men’s suits, coats and
trousers). This first du Pont factor therefore weighs heavily in favor of finding a
likelihood of confusion. See Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (the
first du Pont likelihood of confusion factor involves an analysis of the similarity or
dissimilarity of the marks in their entireties as to appearance, sound, connotation
and commercial impression).
B. The Goods
Next, we compare the goods as they are identified in the involved application and
cited registration. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d
1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Systems, Inc. v. Houston
Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) and
Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir.
2002). The goods need not be identical or even competitive to find a likelihood of
confusion. On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 56 USPQ2d 1471,
1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1898
(Fed. Cir. 2000). They need only be “related in some manner and/or if the
circumstances surrounding their marketing are such that they could give rise to the
mistaken belief that [the goods] emanate from the same source.” Coach Servs., Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012)
Serial No. 86829440
- 5 -
(quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)). Evidence of
relatedness may include news articles and/or evidence from computer databases
showing that the relevant goods are used together or used by the same purchasers;
advertisements showing that the relevant goods are advertised together or sold by
the same manufacturer or dealer; and/or copies of prior use-based registrations of the
same mark for both applicant’s goods and the goods listed in the cited registration.
See, e.g., In re Davia, 110 USPQ2d 1810, 1817 (TTAB 2014) (finding pepper sauce and
agave related where evidence showed both were used for the same purpose in the
same recipes and thus consumers were likely to purchase the products at the same
time and in the same stores). Likelihood of confusion must be found as to the entire
class if there is likely to be confusion with respect to any good that comes within the
identification of goods in that class. In re C.H. Hanson Co., 116 USPQ2d 1351, 1355
(TTAB 2015) (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335,
209 USPQ 986, 988 (CCPA 1981)).
Where identical marks are involved, as is the case here, the degree of similarity
between the goods that is required to support a finding of likelihood of confusion
declines. In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015) (citing In re
Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993)), aff’d, 866 F.3d
1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Insofar as the Examining Attorney’s refusal
applies to both classes of goods, we shall analyze separately each individual class.
Applicant argues that the only similarity between the goods is that they fall under
the broad category of apparel. Applicant makes a distinction between Registrant’s
Serial No. 86829440
- 6 -
women’s “sportswear” which is defined as “(1) clothes that people wear for playing
sports; and (2) comfortable clothes that people wear for informal activities”6 versus
uniforms and scrubs for medical professionals defined as “loose-fitting clothing worn
by hospital staff.”7 The implication of Applicant’s argument is that there can be no
sweeping rule regarding the relatedness of apparel items. To that extent, Applicant
is correct that “there can be no rule that certain goods (i.e. all clothing products) are
per se related. . . .” The H.D. Lee Co. Inc. v. Maidenform, Inc., 87 USPQ2d 1715, 1723
(TTAB 2008). The Examining Attorney, however, does not argue that the involved
goods are “per se” related. Rather, the Examining Attorney has submitted evidence
to show that Applicant’s and Registrant’s goods are commercially related.
Furthermore, based on the identifications and evidence of record, it is clear that
Applicant’s and Registrant’s goods are complementary items of clothing, which may
be worn together by women working in the medical field.
Specifically, with regard to Applicant’s International Class 10 “[m]edical wearing
apparel, namely, scrub tops and bottoms” and Registrant’s International Class 25
“women’s sportswear, namely, … shirts,” the Examining Attorney made of record the
following third-party, use-based registration showing that the same entity has
registered a single mark identifying both Applicant’s goods and the legal equivalent
of Registrant’s: Reg. No. 4713824 for the mark SOULGUARD for “Medical wearing

6 Definition of “sportswear” from Merriam-Webster (www.merriam-webster.com) submitted
with June 30, 2016 Response to Office Action, TSDR at 5.
7 Definition of “scrub” from Merriam-Webster (www.merriam-webster.com) submitted with
June 30, 2016 Response to Office Action, TSDR at 6.
Serial No. 86829440
- 7 -
apparel, namely, caps; Medical wearing apparel, namely, scrub pants; Medical
wearing apparel, namely, scrub tops” in International Class 10 and “Athletic
shirts; Bottoms; Briefs; Collared shirts; Dress shirts; Golf shirts; Ladies' underwear;
Men’s underwear; Polo shirts; Shirts; Socks; Sport shirts; T-shirts; Underwear” in
International Class 25.8 (Emphasis added). In addition, the record includes evidence
that it is not uncommon for Applicant’s International Class 10 goods and
International Class 25 products to be sold under the same trademark as Registrant’s
International Class 25 women’s sportswear apparel or by the same online retailer:
Carhartt (www.carhartt.com) offering via its direct-to-consumer sale
website under the Carhartt brand name women’s medical and non-
medical scrub tops and bottoms (e.g., mock wrap two-pocket scrub top;
fashion waist scrub top; multi-cargo scrub pant; flare leg scrub pant) and
women’s sportswear shirts (e.g., women’s lightweight, slightly fitted
shirt that wicks away sweat);9

Dickie’s (www.dickies.com) offering via its direct-to-consumer sale
website under the Dickie’s brand name women’s non-medical scrub tops
(e.g., Beary Christmas to All, Happy Owl-o-ween) and women’s
sportswear jackets (e.g. women’s performance full zip hoodie);10

Jockey (http://jockey-scrubs.com) and (www.jockey.com) offering via its
direct-to-consumer sale website under the Jockey brand name women’s
medical and non-medical women’s scrub tops and bottoms, and women’s
sportswear shirts and jackets (e.g., performance tee, windbreaker);11

Urbane (www.urbanescrubs.com) offering via its direct-to-consumer
sale website under the Urbane brand name women’s non-medical scrub
tops and women’s sportswear shirt (energy tee, yoga inspired knit
pant);12 and

8 July 23, 2016 Office Action, TSDR at 23.
9 Id. at 34-39.
10 Id. at 40-43.
11 Id. at 44-47.
12 Id. at 57-61.
Serial No. 86829440
- 8 -

Allheart America’s Medical Superstore (www.allheart.com) an online
retailer offering a variety of brands of women’s medical and non-medical
scrub tops and bottoms (e.g., women’s v-neck abstract print scrub top;
women’s elastic waist yoga scrub pant), lab coats, and women’s
sportswear jacket’s and shirts (e.g., women’s French terry jacket;
women’s long sleeve crew neck stretch t-shirt).13

This evidence also shows that consumers may not only expect to encounter such
products under the same trademark but may also look for coordinating items. We
acknowledge that some of the aforementioned evidence may involve house marks, but
this is no surprise given the nature of the goods. The evidence still remains probative
to the extent that it demonstrates that the involved goods may emanate from the
same source and are designed to be used together.
In short, we can conclude, based on the record herein, that Applicant’s and
Registrant’s goods are related, complementary clothing items that can be worn
together by female professionals working in the medical field. See In re Martin’s
Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984)
(“[C]omplementary use has long been recognized as a relevant consideration in
determining a likelihood of confusion.”). As such, this du Pont factor also favors a
finding of likelihood of confusion.
C. Established, likely-to-continue channels of trade

We direct our attention to the established, likely-to-continue channels of trade,
the third du Pont factor. Applicant contends that Applicant’s and Registrant’s
identified goods are sold in disparate, non-overlapping trade channels to different

13 Id. at 62-65.
Serial No. 86829440
- 9 -
consumers. As Applicant asserts, its goods are sold only through specialty retailers
targeting medical professionals such as Scrubs & Beyond, Uniform City, and Uniform
Advantage. In support thereof, Applicant has submitted excerpts from its own
website and Registrant’s to purportedly show that Applicant’s medical apparel line is
sold through brick-and-mortar and online retailers that sell uniforms for medical
professionals either exclusively or in substantial part.14 By contrast, Applicant
asserts that the evidence demonstrates that Registrant sells its women’s sportswear
through department stores such as Macy’s, Belk and Lord & Taylor to the ordinary
consumer.15
Applicant’s argument is unpersuasive. Because the identifications in the
application and cited registration have no restrictions on channels of trade, we must
presume that the goods travel in all channels of trade appropriate for such goods. In
re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting
Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1005
(Fed. Cir. 2002)). These trade channels include, as reflected in the record, retailers
selling various brand name products as well as direct business-to-consumer (B2C)
websites selling both medical apparel and women’s sportswear. In addition, both
parties’ goods may be encountered by the same prospective consumers, namely female
medical professionals. Hence, the third du Pont factor regarding the similarity or

14 June 30, 2016 Response to Office Action, TSDR at 15-22.
15 Id. at 8-14.
Serial No. 86829440
- 10 -
dissimilarity of established, likely to continue trade channels also favors a finding of
likelihood of confusion.
D. The Number and Nature of Similar Marks in Use on Similar Goods
Lastly, we consider the number and nature of similar marks in use on similar
goods, the sixth du Pont factor. In an ex parte appeal, “[t]he purpose of [an applicant]
introducing third-party uses is to show that customers have become so conditioned
by a plethora of such similar marks that customers have been educated to distinguish
between different such marks on the bases of minute distinctions.” Palm Bay, 73
USPQ2d at 1694. See also Jack Wolfskin Ausrustung Fur Draussen GmbH & Co.
KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136
(Fed. Cir. 2015); Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115
USPQ2d 1671, 1675-76 (Fed. Cir. 2015) (internal citations omitted). “[T]he strength
of a mark is not a binary factor” and “varies along a spectrum from very strong to
very weak.” Juice Generation, 115 USPQ2d at 1675-76 (internal citations omitted).
“The weaker [the Registrant’s] mark, the closer an applicant’s mark can come without
causing a likelihood of confusion and thereby invading what amounts to its
comparatively narrower range of protection.” Id. at 1676 (internal citations omitted).
See also Palm Bay, 73 USPQ2d at 1693 (“Evidence of third-party use of similar marks
on similar goods is relevant to show that a mark is relatively weak and entitled to
only a narrow scope of protection.”). “In determining the strength of a mark, we
consider both its inherent strength based on the nature of the mark itself and its
commercial strength, based on the marketplace recognition value of the mark.”
Serial No. 86829440
- 11 -
American Lebanese Syrian Associated Charities Inc. v. Child Health Research Inst.,
101 USPQ2d 1022, 1028 (TTAB 2011) (citing Tea Board of India v. Republic of Tea
Inc., 80 USPQ2d 1881, 1899 (TTAB 2006) and McCarthy on Trademarks and Unfair
Competition § 11:83 (4th ed. 2011) (“The first enquiry focuses on the inherent
potential of the term at the time of its first use. The second evaluates the actual
customer recognition value of the mark at the time registration is sought or at the
time the mark is asserted in litigation to prevent another’s use.”)).
Applicant maintains that the term GRACE is relatively weak and entitled to a
narrow scope of protection as applied to apparel. In support thereof, Applicant has
made of record three Principal Register third-party registrations for clothing:16
Registration No. 4722298 for the mark GRACE MMXIII; Registration No. 3681131
for the mark GRACE IN LOS ANGELES; and Registration No. 4420876 for the mark
GRACE JEANS. Active third-party registrations may be relevant to show that a
mark or a portion of a mark is descriptive, suggestive, or so commonly used in a
particular industry that the public will look to other elements to distinguish the
source of the goods. See Juice Generation, 115 USPQ2d at 1674-75; In re Hartz Hotel
Servs., Inc., 102 USPQ2d 1150, 1153-54 (TTAB 2012); In re Melville Corp., 18
USPQ2d 1386, 1388 (TTAB 1991); In re Dayco Products-Eaglemotive Inc., 9 USPQ2d

16 The third-party applications submitted by Applicant have little evidentiary value, if any.
“Third-party applications, as opposed to registrations, have no probative value other than as
evidence that the applications were filed.” TRADEMARK TRIAL AND APPEAL BOARD
MANUAL OF PROCEDURE § 1208.02 (June 2017) (citing in Note 4 In re Mr. Recipe, LLC,
118 USPQ2d 1084, 1089 (TTAB 2016); In re Toshiba Medical Systems Corp., 91 USPQ2d
1266, 1270 n.8 (TTAB 2009); In re Fiesta Palms LLC, 85 USPQ2d 1360, 1366 n.7 (TTAB
2007); In re 1st USA Realty Prof’ls Inc., 84 USPQ2d 1581, 1583 (TTAB 2007); In re Phillips-
Van Heusen Corp., 63 USPQ2d 1047, 1049 n.4 (TTAB 2002)).
Serial No. 86829440
- 12 -
1910, 1911-12 (TTAB 1988); Plus Prods. v. Star-Kist Foods, Inc., 220 USPQ 541, 544
(TTAB 1983). Applicant has not established with these relatively few registrations
that GRACE is suggestive or descriptive or so commonly used in connection with
clothing that the public will look to other elements to distinguish the source of the
goods. See Juice Generation, 115 USPQ2d at 1674-75.
In addition, the record contains no evidence that the referenced third-party marks
are in actual use or that consumers are aware of them. See Palm Bay, 73 USPQ2d at
1693 (“The probative value of third-party trademarks depends entirely upon their
usage.”). Nor does the record include other examples of actual use of the trademarks
consisting of or comprising the mark GRACE in the clothing field. Thus, the evidence
before us falls short of a showing that would allow us to conclude that the cited mark
is diluted and commercially weak for the relevant goods. Compare Jack Wolfskin, 116
USPQ2d at 1136 (“extensive” evidence not only of third-party registrations but also
“of these marks being used in internet commerce” for the relevant goods); Juice
Generation, 115 USPQ2d at 1671 (uncontradicted testimony of “a considerable
number” of third party uses of similar marks, along with third-party registrations).
We therefore deem this du Pont factor neutral.
III. Conclusion
We have carefully considered all of the evidence made of record, as well as all of
the arguments related thereto, including any evidence and arguments not specifically
discussed in this opinion. As indicated earlier, the identical nature of the marks
weighs heavily in finding a likelihood of confusion. This, coupled with the related,
Serial No. 86829440
- 13 -
complementary nature of the goods which we must assume are offered in overlapping
trade channels to consumers including female medical professionals, leads us to the
conclusion that prospective consumers are likely to confuse the involved goods as
originating from or associated with or sponsored by the same entity.
Decision: The Section 2(d) refusal to register Applicant’s mark is affirmed as to
International Classes 10 and 25.